Engel Industries, Inc. v. Lockformer Co.

• Decision Date: 08 October 1991
• Docket Number: No. 90-1482,90-1482
• Citation: 946 F.2d 1528,20 USPQ2d 1300
• Parties: ENGEL INDUSTRIES, INC., Plaintiff-Appellee, v. The LOCKFORMER COMPANY, Iowa Precision Industries, Inc. and Met-Coil Systems Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1528

946 F.2d 1528

20 U.S.P.Q.2d 1300

ENGEL INDUSTRIES, INC., Plaintiff-Appellee, v. The LOCKFORMER COMPANY, Iowa Precision Industries, Inc. and Met-Coil Systems Corporation, Defendants-Appellants.

No. 90-1482.

United States Court of Appeals Federal Circuit.

Oct. 8, 1991.

Rehearing Denied Nov. 13, 1991.

John K. Roedel, Jr., Senniger, Powers, Leavitt & Roedel, St. Louis, Mo., argued for plaintiff-appellee. With him on the brief was Kurt F. James. Also on the brief was Jerome A. Gross, Jerome A. Gross & Associates, St. Louis, Mo., of counsel.

Clarence J. Fleming, Jones, Day, Reavis & Pogue, Chicago, Ill., argued for defendants-appellants. With him on the brief was Sandra B. Weiss.

Before NEWMAN, MICHEL, and PLAGER, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

The defendants in this declaratory judgment action, Met-Coil Systems Corporation and its subsidiaries The Lockformer Company and Iowa Precision Industries, appeal the decision of the United States District Court for the Eastern District of Missouri. ¹ The court held all the claims of United States Patent No. 4,466,641 (the '641 patent) invalid for the patentee's failure to disclose the best mode as required by 35 U.S.C. § 112. The court also held that the patentee committed inequitable conduct based on failure to disclose the best mode, and voided the agreement whereby Engel Industries, the declaratory judgment plaintiff, had been licensed under the '641 patent. The district court also held that the '641 patent had not been proved invalid under 35 U.S.C. § 103.

We reverse the rulings of invalidity and inequitable conduct. No cross-appeal was taken from the ruling that the patent was not invalid because of obviousness.

Background

The Lockformer Company is a manufacturer of roll-forming machines that form segments of ducts that distribute air throughout a building; Iowa Precision Industries manufactures equipment for this industry. Duct segments are made on roll-forming machines at or near the construction site, and are connected before or during installation. According to the record, before the invention described in the '641 patent these connections required rivets or spot welds, procedures that were time consuming and labor intensive.

In 1981 Howard McElroy, an engineer employed by Iowa Precision, began work on improving the connection of duct sections. His goal was to enable duct sections to be connected on site in a simple manner. Mr. McElroy asked The Lockformer Company to quote the price of a roll-forming machine that would form duct segments having a particular form of integral flange that McElroy then had in mind. Growing out of this exchange, Lockformer and Iowa Precision, which were not then sister companies, decided to collaborate on this problem. Early in this collaboration two meetings were held, those present including McElroy, Robert Heilman (Lockformer's vice president of engineering), and Leo R. Gale (Lockformer's executive vice president and director of sales). These meetings were held on December 2, 1981 and January 29, 1982, and are pertinent to the issue of best mode, as we shall discuss.

Flowing from this collaboration Messrs. Heilman and McElroy developed, as joint inventors, the system described and claimed in the '641 patent. In this system the duct sections are formed with an integral flange configured so as to engage corner connectors in such a way that the connectors are simply snapped into place. This snap-fit made unnecessary the previously used rivets and other labor-intensive connection methods. The ducts (10) with corner connectors (34) are illustrated in Fig. 1 of the patent:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Patent claims 1-6 and 13-19 are apparatus claims, and claims 7-12 and 20-25 are method claims. Claim 1 is representative of the apparatus claims:

1. In a system for connecting the ends of sheet metal ducts wherein a frame is provided for each duct end, corner connectors defining perpendicularly extending arms are associated with the frames, and means are provided to interconnect the frames of adjacent duct ends,

the improvement wherein the sheet metal used for the ducts is also employed for forming said frames,

each said frame specifically comprising a roll-formed section consisting of an integral part of a duct wall,

each said section comprising a first portion extending perpendicularly outwardly from a duct wall, and a second portion bent rearwardly into a position opposite an end portion of the duct wall, the distance between said second portion and said end portion substantially corresponding to the width of an arm of a corner connector, the side edges of each such arm being received in engagement with the respective surfaces of a second portion and end portion whereby the corner connectors are held in position relative to a frame,

and including retainer means defined by said second portion for receiving a side edge of an arm for thereby securely holding the arm in position.

Claim 7 is a typical method claim:

7. In a method for connecting the ends of sheet metal ducts wherein a frame is provided for each duct end, corner connectors defining perpendicularly extending arms are associated with the frames, and means are provided to interconnect the frames of adjacent duct ends,

the improvement comprising the steps of forming each said frame by roll-forming a section of the duct whereby the frame comprises an integral part of the sheet metal duct,

each said roll-formed section comprising a first portion extending perpendicularly outwardly from a duct wall, and a second portion bent rearwardly into a position opposite an end portion of the duct wall, the distance between said second portion and said end portion substantially corresponding to the width of an arm of a corner connector,

forming a retainer means in said second portion, introducing the arms of the corner connectors between respective second portions and end portions whereby the side edges of each such arm are received in engagement with the respective surfaces of a said second portion and end portion to hold the corner connectors in position relative to a frame, said retainer means assisting in the holding by said second portion,

and thereafter fastening the respective connectors together to provide an assembly.

Engel Industries, a manufacturer of roll-forming machines, was a licensee under the '641 patent. Engel brought a declaratory judgment action against Lockformer, Iowa Precision, and their parent company Met-Coil (collectively "Met-Coil"), seeking a declaration of invalidity and non-infringement, and refund of royalties paid.

Best Mode--35 U.S.C. § 112

The district court found that crimping the corner connectors after they are snapped onto the ducts is the best mode of carrying out the '641 invention, and that this was not disclosed in the '641 patent. The district court did not address particular claims or distinguish between apparatus and method, but held all the claims invalid on this ground.

35 U.S.C. § 112, p 1, requires:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Patent invalidity for failure to set forth the best mode requires that (1) the inventors knew of a better mode of carrying out the claimed invention than they disclosed in the specification, and (2) the inventors concealed that better mode. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 927-28, 16 USPQ2d 1033, 1036-37 (Fed.Cir.1990). Failure of compliance must be proved by clear and convincing evidence. See Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1517, 220 USPQ 929, 939-40 (Fed. Cir.), cert. denied, 469 U.S. 871, 105 S.Ct. 220, 83 L.Ed.2d 150, 224 USPQ 520 (1984). Determination of whether the best mode requirement has been met is a question of fact, Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1535-36, 3 USPQ2d 1737, 1745 (Fed.Cir.), cert. denied, 484 U.S. 954, 108 S.Ct. 346, 98 L.Ed.2d 372 (1987) (compliance with the best mode requirement depends on the applicant's state of mind and is a question of fact), and the trial court's finding will not be disturbed unless it is clearly in error. Each claim must be considered individually for compliance with the best mode requirement. See, e.g., Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 940, 15 USPQ2d 1321, 1328 (Fed.Cir.), cert. denied, --- U.S. ----, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990).

The best mode inquiry is directed to what the applicant regards as the invention, which in turn is measured by the claims. Unclaimed subject matter is not subject to the disclosure requirements of § 112; the reasons are pragmatic: the disclosure would be boundless, and the pitfalls endless. See Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 588, 7 USPQ2d 1050, 1053 (Fed.Cir.1988) ("It is concealment of the best mode of practicing the claimed invention that section 112 p 1 is designed to prohibit") (emphasis in original). It has been explained that a patent disclosure is not a "production specification", In re Gay, 309 F.2d 769, 774, 50 CCPA 725, 135 USPQ 311, 316 (1962), and that technical details apparent to a person of ordinary skill need not be included in the patent specification. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556-57, 220 USPQ 303, 316 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). See also Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384-85, 231 USPQ 81, 94 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987) (absence of detailed disclosure of best mode for screening or...